DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim for the benefit of prior-filed applications (foreign priority application JP2023-066673 filed April 14, 2023) under 35 U.S.C. 110(e) or under 35 U.S.C. 120, 121, or 365(c) is not acknowledged. No priority documents have been received.
Information Disclosure Statement
The Information Disclosure Statement filed on January 4, 2024 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “unit” are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “unit” are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
Per claim 1:
“an information storage unit”
“a data acquisition unit”
“a user characteristic score calculation unit”
“a self-evaluation score calculation unit”
“an other-evaluation score calculation unit”
“a final evaluation score calculation unit”
Per claim 4:
“an information storage unit”
Per claim 5:
“an information storage unit”
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
Claims rejected under 35 U.S.C. § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
Claim 1 recites the following:
“an information storage unit”
“a data acquisition unit”
“a user characteristic score calculation unit”
“a self-evaluation score calculation unit”
“an other-evaluation score calculation unit”
“a final evaluation score calculation unit”
Claim 4 recites the following:
“an information storage unit”
Claim 5 recites the following:
“an information storage unit”
These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the specification fails to disclose the hardware and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Furthermore, the specification does not provide a disclosure of the hardware and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed “units,” per claims 1, 4, and 5 to perform the claimed functions. As such, claim 1-5 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 2-3 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1.
Claims rejected under 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Per MPEP §2181, to satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850. A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007).
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(1) when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(2) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
(3) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.
Claim 1 recites the following:
“an information storage unit”
“a data acquisition unit”
“a user characteristic score calculation unit”
“a self-evaluation score calculation unit”
“an other-evaluation score calculation unit”
“a final evaluation score calculation unit”
Claim 4 recites the following:
“an information storage unit”
Claim 5 recites the following:
“an information storage unit”
As such, 35 U.S.C. 112(f) is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed functions. Accordingly, the metes and bounds of the claim are not clear. Therefore, claims 1, 4 and 5 are rejected 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 2-3 are also rejected 35 U.S.C. § 112(b), based on their respective dependencies to claim 1.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “an information processing device” (i.e. “a machine”); claim 4 is directed to “an information processing method” (i.e. “a process”); and claim 5 is directed to “a non-transitory computer-readable storage medium” (i.e. “a machine”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “calculating a user evaluation score,” either in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1:
“stores information about a user and information about actions of other users regarding the information about the user;
acquires information regarding a characteristic item, among the information about the user and the information about the actions of the other users; and
calculates a user evaluation score about the characteristic item based on the information about the user and the information about the actions of the other users regarding the characteristic item, wherein includes:
calculates a self-evaluation score determined by the user based on the information about the user regarding the characteristic item;
calculates an other-evaluation score determined by the other users based on the information about the actions of the other users regarding the characteristic item; and
sets respective weighting coefficients for the self-evaluation score and the other-evaluation score according to the characteristic item, and that calculates the user evaluation score about the characteristic item based on the set weighting coefficients, the self-evaluation score, and the other-evaluation score.”
Per claim 4:
“acquiring information regarding a characteristic item, among information about a user and information about actions of other users;
calculating a self-evaluation score determined by the user based on the information about the user regarding the characteristic item;
calculating an other-evaluation score determined by the other users based on the information about the actions of the other users regarding the characteristic item;
setting respective weighting coefficients for the self-evaluation score and the other-evaluation score according to the characteristic item; and
calculating a user evaluation score about the characteristic item based on the set weighting coefficients, the self-evaluation score, and the other-evaluation score.”
Per claim 5:
“acquiring information regarding a characteristic item, among information about a user and information about actions of other users;
calculating a self-evaluation score determined by the user based on the information about the user regarding the characteristic item;
calculating an other-evaluation score determined by the other users based on the information about the actions of the other users regarding the characteristic item;
setting respective weighting coefficients for the self-evaluation score and the other-evaluation score according to the characteristic item; and
calculating a user evaluation score about the characteristic item based on the set weighting coefficients, the self-evaluation score, and the other-evaluation score.”
These limitations simply describe a process of data gathering and manipulation, which is analogous to “a process of gathering and analyzing information of a specified content, then displaying the results, [without] any particular assertedly inventive technology for performing those functions.” (i.e. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “an information processing device,” “an information storage unit,” “a data acquisition unit,” “a user characteristic score calculation unit,” “a self-evaluation score calculation unit,” “an other-evaluation score calculation unit,” “a final evaluation score calculation unit,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “calculating a user evaluation score,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “an information processing device,” “an information storage unit,” “a data acquisition unit,” “a user characteristic score calculation unit,” “a self-evaluation score calculation unit,” “an other-evaluation score calculation unit,” and “a final evaluation score calculation unit,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “an information processing device,” “an information storage unit,” “a data acquisition unit,” “a user characteristic score calculation unit,” “a self-evaluation score calculation unit,” “an other-evaluation score calculation unit,” and “a final evaluation score calculation unit,” are described the written description of the specification as originally filed in para. [0075] as follows:
[0075] As described above, the information processing device 1 according to the present embodiment includes the information storage unit 30, the data acquisition unit 10, and the user characteristic score calculation unit 20. The information storage unit 30 stores information regarding the user and information regarding the actions of other users with respect to the information regarding the user. The data acquisition unit 10 acquires information regarding characteristic items from the information storage unit 30 out of the information regarding the user and the information regarding the behavior of other users. The user characteristic score calculation unit 20 calculates a user evaluation score regarding the characteristic item based on information regarding the user with respect to the characteristic item and information regarding the behavior of other users. Here, the user characteristic score calculation unit 20 includes a self-evaluation score calculation unit 21, an other-evaluation score calculation unit 22, and a final evaluation score calculation unit 23. The self-evaluation score calculation unit 21 calculates a self-evaluation score by the user based on information regarding the user with respect to the characteristic items. The other-evaluation score calculation unit 22 calculates the other user's evaluation score by other users based on information regarding the behavior of other users with respect to the characteristic item. The final evaluation score calculation unit 23 sets weighting coefficients regarding the self-evaluation score and the other-person evaluation score, respectively, according to the characteristic item, and calculates the user evaluation score for the characteristic item based on the set weighting coefficient, self-evaluation score, and other-person evaluation score. By configuring the information processing device 1 in this way, it is possible to appropriately handle other users' evaluations of the user's characteristic items, and to optimize characteristic items (evaluation items) that are over- or under-evaluated by the user. This makes it possible to improve the accuracy in evaluating the user's characteristic items. That is, it is possible to provide a user evaluation score that is closer to the truth for the characteristic items of the user of the information processing device 1.”
The claimed “device” and “units” are functionally described and provide no details beyond their descriptive titles. As such, these elements are reasonably interpreted as a generic computer with no details of anything beyond ubiquitous standard off-the-shelf equipment using generic, well-known, and conventional data processing software.
Therefore, the Applicant’s own specification is disclosing ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-3 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-3 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1. Therefore, claims 1-5 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Allowable Subject Matter
Claims 1-5 contain allowable subject matter. The closest prior art of record is U.S. PG Pub. 2024/0346945 to Nakanishi, et al. (hereinafter referred as “Nakanishi”). However, Nakanishi does not explicitly teach: “…an other-evaluation score calculation unit that calculates an other-evaluation score determined by the other users based on the information about the actions of the other users regarding the characteristic item; and a final evaluation score calculation unit that sets respective weighting coefficients for the self-evaluation score and the other-evaluation score according to the characteristic item, and that calculates the user evaluation score about the characteristic item based on the set weighting coefficients, the self-evaluation score, and the other-evaluation score,” per claim 1, or substantially similar limitations in claims 4 and 5.
Therefore, claims 1-15 are allowable subject matter, if no other statutory rejections remain. In the present case, claims 1-5 stand rejected under 35 U.S.C. §§101, 112(a) and 112(b).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715